Society of American Archivists
72nd Annual Meeting
Of Copyright and Contract and
Public Domain Materials
Simon J. Frankel
Covington & Burling LLP
August 28, 2008
Copyright
• Applies to creative expression
• Limits rights of all persons to copy work, or to
use it in other works, without the permission
of the author
– “a right against the world”
• Is only for a limited time
– “Public domain”
• Generally, works published prior to 1923 no
longer protected by U.S copyright law
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Contract
• An agreement creating obligations between
parties governing any lawful matter
• Question: To what extent can a party that
possesses a public domain work use the law
of contract, rather than the law of copyright, to
control and profit from the work?
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Copyright and Public Domain Works
• Can an owner of a public domain work
condition access to works on license terms?
• Can archives achieve control (and perhaps
revenues) by contract if not by copyright?
• Can a contract create enforceable protections
that go beyond those of copyright law?
4
Schwartz v. Berkeley Historical Society
(N.D. Cal. 2005) (settled)
• “The Berkeley Historical
Society (BHS) is a non-profit
all-volunteer group serving
as a primary resource for
the collection and
preservation of local
history.”
• Maintains archive of
photographs of old Berkeley
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Schwartz v. Berkeley Historical Society
(N.D. Cal. 2005) (settled)
• Richard Schwartz—amateur
historian and author in Berkeley
• Self-published Berkeley 1900,
including old (public domain)
photographs from BHS collection
• Signed “One Time Use
Agreement”
– limited right to reproduce to five year
period
– prohibited transfer of rights granted
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Schwartz v. Berkeley Historical Society
(N.D. Cal. 2005) (settled)
• Schwartz filed declaratory judgment action
seeking declaration that BHS’s terms of use
are “legally unenforceable as an attempt to
enforce copyrights that have expired and
fallen into the public domain”
• BHS moved to dismiss complaint on the
grounds that the agreed terms allowing
access to the public domain works were
enforceable as a matter of law
• Case settled prior to hearing
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How Can Archives and Museums Control
Distribution of Public Domain Works?
• By copyright?
– by claiming copyright in the reproductions of their
public domain images or manuscripts that they sell
or distribute
• By contract?
– by conditioning access to public domain works on
agreement to limit distribution or use of materials
• By not allowing access at all?
– prohibitions on photography; allowing no copying
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Bridgeman Art Library, Ltd. v. Corel Corp.,
25 F. Supp. 2d 421 (S.D.N.Y. 1998)
• Bridgeman acquired rights to market
reproductions of public domain works of art,
and marketed large format color, high
resolution transparencies on CD-ROM, with
color correction strips
• “[T]he point of the exercise was to reproduce
the underlying works with absolute fidelity”
• Corel’s CD-ROM contained 700 digital
productions of well-known paintings
• Bridgeman sued Corel for infringement with
respect to 120 of Bridgeman’s images
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Bridgeman Art Library, Ltd. v. Corel Corp.,
25 F. Supp. 2d 421 (S.D.N.Y. 1998)
• Bridgeman’s theory of infringement:
– although works in public domain, access strictly
limited, and only Bridgeman had authorized
transparencies of many of the works
– Corel must have copied Bridgeman’s images
because it had not proved another legal source
• Summary judgment for Corel granted: Works
not copyrightable because they were
substantially exact reproductions of public
domain works
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Bridgeman Art Library, Ltd. v. Corel Corp.,
25 F. Supp. 2d 421 (S.D.N.Y. 1998)
• Section 102(a) limits copyright protection to
“original works of authorship”
• Feist Pub., Inc. v. Rural Tel. Serv. Co. (1991):
“creative spark,” not “sweat of brow” required
• L. Batlin & Son, Inc. v. Snyder (2d Cir. 1976):
“distinguishable variation” required to render
reproduction of art sufficiently “original”
• “‘slavish copying,’ although doubtless
requiring technical skill and effort, does not
qualify”—“no spark of originality”
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Bridgeman Art Library, Ltd. v. Corel Corp.,
25 F. Supp. 2d 421 (S.D.N.Y. 1998)
Was decision correct?
• Generally, photographs receive copyright
protection—isn’t each affected by author?
• How could family snapshot be protected, but
not work of highly skilled art photographer?
• Many museums and publishers continue to
affix copyright notices to high quality
reproductions
• But conclusion of case seems unavoidable
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So Can Contract Allow For Control Over
Public Domain Works?
Is a contract restricting use of a public domain
work enforceable? Against whom?
Relevant case law on analogous issues:
• Enforceability of contract restricting use of
work within the subject matter of copyright but
not protected by copyright—e.g., directories
• Enforceability of contract restricting use of
copyrighted work beyond provisions of
Copyright Act—e.g., prohibiting fair use or
first sale
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Copyright Preemption
Section 301 of the Copyright Act of 1976:
“[A]ll legal or equitable rights that are
equivalent to any of the exclusive rights within
the general scope of copyright . . . in works of
authorship that are fixed in a tangible medium
of expression and come within the subject
matter of copyright . . . are governed
exclusively by this title.”
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Copyright Preemption
Two prong test for preemption:
1. Rights asserted must be “equivalent” to
those protected by Copyright Act
•
To survive preemption, claim must protect right
“qualitatively different,” with “extra element”
distinct from copyright action
2. Work at issue must fall within the “subject
matter” of the Copyright Act (Sections 102,
103)
•
Even if work not one work protected by copyright
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ProCD v. Zeidenberg,
86 F.3d 1447 (7th Cir. 1996)
• Zeidenberg purchased the consumer version
of ProCD’s telephone directory database
– a work within the subject matter of copyright, but
not one protected by copyright, as not sufficiently
original
• He then resold the directory information over
the internet, in violation of ProCD’s
shrinkwrap license terms
• ProCD sued for violation of license
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ProCD v. Zeidenberg,
86 F.3d 1447 (7th Cir. 1996)
• District court: Claim preempted by Copyright
Act
• Seventh Circuit reversed: a contract claim is
not equivalent to copyright, as “a copyright is
a right against the world. Contracts, by
contrast, generally affect only their parties”
• Court declined to create blanket rule that
contract claims are never preempted, as a
contract might interfere with the “national
objectives” of the Act and be preempted
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Vault Corp. v. Quaid Software Ltd., 847
F.2d 255 (5th Cir. 1988)
• Louisiana’s Software License Enforcement
Act set out requirements for shrinkwrap
licenses to be enforceable
• Vault sold its software with shrinkwrap license
precluding decompiling the software
• Quaid decompiled Vault’s software program
in order to create a program which unlocked
Vault’s software protection device
• Vault sued under SLEA and license
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Vault Corp. v. Quaid Software Ltd., 847
F.2d 255 (5th Cir. 1988)
• Fifth Circuit found that provision of SLEA
allowing software producers to prohibit users
from decompiling or disassembling
programs—and the contract claim based on
it—was preempted
• Statute and license conflict with Section 117
of Copyright Act, which allows users to “make
an adaptation” of a software program
• License term unenforceable
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Bowers v. Baystate Technologies, Inc.,
320 F.3d 1317 (Fed. Cir. 2003)
•
•
Baystate reverse
engineered Bowers’
CAD software to
create a competitive
product, in violation of
Bower’s shrinkwrap
license agreement
Note: reverse
engineering held to be
within fair use
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Bowers v. Baystate Technologies, Inc.,
320 F.3d 1317 (Fed. Cir. 2003)
•
•
•
•
Federal Circuit held: mutual assent and
consideration were extra elements defeating
preemption
Contractual limitations on conduct otherwise
within fair use are enforceable
Distinguished Vault as it dealt with a state law
“prohibiting all copying of a computer
program”
Dissent: freely negotiated limitation on fair
use is enforceable, but shrinkwrap preempted
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Supremacy Clause Preemption
• Constitution, Art. VI, §2: The Constitution and
“the laws of the United States which shall be
made in pursuance thereof . . . shall be the
supreme law of the land”
• So a state law claim that conflicts with the
general scope or purpose of the copyright law
may be preempted
22
Davidson & Assocs. v. Jung,
422 F.3d 630 (8th Cir. 2005)
• Plaintiff, a creator and seller of computer
games, created online gaming service
available only to purchasers of its games-subject to a user agreement prohibiting
reverse engineering.
• Defendants reverse engineered plaintiff’s
games in order to create a competing online
gaming service.
• Plaintiff sued for copyright infringement and
breach of the user agreement and license.
23
Davidson & Assocs. v. Jung,
422 F.3d 630 (8th Cir. 2005)
• Applying conflict preemption instead of
statutory preemption under Copyright Act, the
Eighth Circuit found no preemption when
users expressly relinquished their rights to
reverse engineer by agreeing to the software
terms of use
So are contract terms restricting use of public
domain works enforceable?
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Compco Corp. v. Day-Brite Lighting,
Inc./Sears, Roebuck & Co. v. Stiffel Co.
(1964)
• Design patents on products found invalid, but
defendants held liable under state unfair
competition law for selling similar articles
• Supreme Court reversed: “Obviously, a State
could not, consistently with the Supremacy
Clause of the Constitution extend the life of a
patent beyond its expiration date or give a
patent on an article which lacked the level of
invention required for federal patents.”
(Sears)
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Compco Corp. v. Day-Brite Lighting,
Inc./Sears, Roebuck & Co. v. Stiffel Co.
(1964)
• “[W]hen an article is unprotected by a patent
or a copyright, state law may not forbid others
to copy that article. To forbid copying would
interfere with the federal policy, found in Art.
1, § 8, cl. 8, of the Constitution and in the
implementing federal statutes, of allowing
free access to copy whatever the federal
patent and copyright laws leave in the public
domain.” (Compco)
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But Is Enforcement of License Terms
Different from Enforcement of State
Statutes or Common Law?
• Judge Dyk, dissenting in Bowers: “From a
preemption standpoint, there is no distinction
between a state law that explicitly validates a
contract that restricts reverse engineering
(Vault) and general common law that permits
such a restriction (as here)”
• Two decisions—concerning archives—have
suggested or held that contractual restrictions
on fair use are not enforceable
27
Salinger v. Random House, Inc. (S.D.N.Y.
1986), rev’d on other grounds (2d Cir.
1987)
• J.D. Salinger sought to enjoin publication of
biography quoting his unpublished letters
• “[T]his restriction should be understood as
applying only to quotations and excerpts that
infringe copyright. To read them as
absolutely forbidding any quotation, no matter
how limited or appropriate, would severely
inhibit proper, lawful scholarly use and place
an arbitrary power in the hands of the
copyright owner going far beyond the
protection provided by law.”
28
Wright v. Warner Books, Inc. (S.D.N.Y.
1990), aff’d (2d Cir. 1991)
• On similar facts, held that quotation of
excerpts from letters was not “publish[ing”
them contrary to library access agreement
• “[A]ny more restrictive interpretation of the
agreement . . . would amount to a finding that
Yale University sought to prevent the airing of
historical facts rather than the unfair
exploitation of another’s creative imagination
or style—a finding at odds with the very
purpose of a great university.”
29
Jacobsen v. Katzer (Fed. Cir. 2008)
• Creator of open source software made work
available pursuant to “Artistic License”
• Defendant used work beyond scope of
license to compete with creator’s work
• Court held that conditions in a license were
enforceable under both contract law and
copyright law—and not mere covenants—
even if copyright owner not paid for license
• Might be read to suggest that conditions
imposed on access to public domain works
are enforceable
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Some Theoretical and Practical
Considerations
• As ProCD noted, contract is only a right
against the parties
• In age of easy digital distribution, how much
practical control will restrictive license terms
allow?
– not enforceable against third parties
– not practical to ask party to bound third parties
and seek to enforce
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Thank you!
Simon J. Frankel
Covington & Burling LLP
415-591-7052
[email protected]
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